Ex Parte Roeth et al

Board of Patent Appeals and Interferences

Mar 6, 2007

10213507 (B.P.A.I. Mar. 6, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASNA ROETH and MANFRED BARTEL
____________

Appeal 2006-2726
Application 10/213,507
Technology Center 2800
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Decided: March 6, 2007
____________

Before ALLEN R. MACDONALD, JEAN R. HOMERE, and JAY P.
LUCAS, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL
Appellants have appealed under 35 U.S.C. § 134(a) the Examiner’s
rejection of claims 10-13, 15-19, 21-24, and 26-30, the only claims pending
in this application. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
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STATEMENT OF THE CASE
Appellants invented a microscope having switchable illumination in at
least two spectral regions. One feature of the invention is that narrow-band
and broad-band filters can be alternately inserted into an illumination beam
path via a positive coupling. Claim 11 is illustrative:
11. A microscope comprising
means for a switchable illumination in at least two spectral regions;
a broad-band light source;
a common illumination beam path for said at least two spectral
regions, said illumination path proceeding from said broad-band light
source;
a narrow-band wavelength-selective filter that can reversibly be
inserted into the illumination beam path at a first position along the beam
path in order to achieve a wavelength-selective illumination in a first of said
at least two spectral regions;
and a broad-band light protection filter, which can reversibly be
inserted into the illumination beam path at a second position along the beam
path alternatively to said wavelength-selective filter;
a motor drive for motorized introducing and then removing the
wavelength-selective filter and/or the light protection filter; and
a positive coupling for the opposite-direction insertion motions of the
wavelength-selective filter and/or of the light protection filter;
wherein the first and second positions are offset from each other along
the beam path.

The Examiner relies on the following prior art references to show
unpatentability:
Stankewitz US 3,833,283 Sept. 3, 1974
Hanamura US 5,565,938 Oct. 15, 1996
Atsushi EP 0 896 237 A1 Feb. 10, 1999

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The Examiner’s rejections are as follows:
1. Claims 11, 13, 15, 21, 22, 24, 26, 27, 29, and 30 are rejected under 35
U.S.C. § 103(a) as unpatentable over Hanamura in view of
Stankewitz.
2. Claims 10, 12, 16-19, 23 and 28 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hanamura in view of Stankewitz and further in
view of Atsushi.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).

OPINION
It is our view, after consideration of the record before us, that the
evidence relied upon and the level of skill in the particular art would have
suggested to one of ordinary skill in the art the invention set forth in the
claims on appeal. Accordingly, we affirm.
We first consider the Examiner’s rejection of claims 11, 13, 15, 21,
22, 24, 26, 27, 29, and 30 under 35 U.S.C. § 103(a) as unpatentable over
Hanamura in view of Stankewitz.1 In rejecting claims under 35 U.S.C.
§ 103, the Examiner must establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d

1 Since Appellants have argued the patentability of these claims as a group,
we select claim 11 as representative. See 37 C.F.R. 41.37(c)(1)(vii).
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1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In
re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Regarding independent claims 11 and 15, the Examiner's rejection
essentially finds that Hanamura teaches every claimed feature except for a
positive coupling for the opposite-direction insertion motions of the
wavelength-selective filter and/or the light protection filter. The Examiner
notes that Hanamura inserts and retracts two filters E1 and E2 into a light
path using solenoids. The Examiner, however, cites Stankewitz as teaching
a positive coupling that supports two optical systems on a pivoting rod. The
coupling places one optical system in a light path while removing the other
from the light path. The Examiner then concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
include such a coupling in the arrangement of Hanamura for positive
coupling of opposite-direction insertion motions of Hanamura’s retractable
filters. Such a modification, according to the Examiner, would reduce
mechanical components (Answer 3-5).
Appellants argue that modifying Hanamura with Stankewitz’s
alternate inserting/removing mechanism would impermissibly render
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Hanamura unsatisfactory for its intended purpose. Appellants emphasize
that a stated objective of Hanamura is to provide color fundus images
generated by visible color photography. But such visible color photography,
according to Appellants, requires positioning both filters E1 and E2 out of
the optical path simultaneously to ensure transmission of unfiltered light
from both the halogen and xenon lamps 4, 6. In short, Appellants contend
that the Examiner’s proposed modification of Hanamura would result in one
filter always being in the light path, thus rendering visible color photography
in Hanamura impossible (Br. 5-6; Reply Br. 2).
We will sustain the Examiner’s rejection of independent claims 11
and 15. In short, we disagree with Appellants that positively coupling
Hanamura’s retractable filters in the manner shown by Stankewitz would
necessarily result in either one filter or the other always being in the light
path. Stankewitz discloses a pivoting rod 10 that simultaneously inserts and
retracts optical components (auxiliary condenser 6 and lens element 9) with
respect to a light path (Stankewitz, Figs. 1a-1b; col. 2, ll. 26-43). Figs. 1a
and 1b show the ultimate extent of pivoting that places either optical
component in the light path. This extent of pivoting disposes the rod 10 at
an angle with respect to the vertical axis in either orientation.
But nothing in the reference precludes a vertical orientation of the
pivotable rod 10. That is, the skilled artisan -- an electrical engineer with
several years of related industry experience -- would have recognized that
disposing the rod 10 vertically would align both optical components along a
line parallel to the rod such that at least some light from light source 1 would
be unaffected by the optical components mounted on the rod. Accordingly,
we see no reason why a commensurate pivotable insertion and retraction
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mechanism for the exciter filters E1 and E2 in Hanamura would not be
capable of providing at least some unfiltered light along with light filtered
by either exciter filter.
We recognize that if the Examiner’s proposed modification renders
the prior art unsatisfactory for its intended purpose, the Examiner has failed
to make a prima facie case of obviousness. See In re Gordon, 733 F.2d 900,
221 USPQ 1125 (Fed. Cir. 1984). But by appropriately mounting a
pivotable mechanism such as that suggested by Stankewitz with respect to
the light path in Hanamura, the skilled artisan would have recognized that
either filtered or unfiltered light could be obtained by inserting either filter
E1 or E2 into the light path, or none at all. In our view, utilizing such a
mechanism would hardly have rendered Hanamura unsatisfactory for its
intended purpose.2
The Examiner’s rejection of independent claims 11 and 15 is therefore
sustained. Since Appellants have not separately argued the patentability of
dependent claims 13, 21, 22, 24, 26, 27, 29, and 30, these claims fall with

2 We also note that Stankewitz in Figs. 2a and 2b discloses an alternative
embodiment that translates a rod 10’ with respect to a light path such that
optical components mounted on the rod 10’ are inserted into and retracted
from the light path (Stankewitz, col. 2, l. 63 – col. 3, l. 6). Although rod 10’
does not pivot, we see no reason why the skilled artisan would not have
applied such a teaching to a pivotable rod (e.g., rod 10 in Figs. 1a-1b) to
translate the entire assembly (i.e., pivotable rod 10 and components mounted
thereon) to and from a location adjacent the light path. Translating the entire
pivotable assembly would also ensure transmission of unfiltered light (i.e.,
by translating the pivotable assembly away from the light path as suggested
in Fig. 2a) in addition to light filtered by either filter (by disposing the
pivotable assembly adjacent the light path as suggested in Fig. 2b).
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independent claims 11 and 15. See In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987). See also 37 C.F.R. § 41.37(c)(1)(vii).
We next consider the Examiner’s rejection of claims 10, 12, 16-19,
23, and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Hanamura in view of Stankewitz and further in view of Atsushi. We find
that the Examiner has established at least a prima facie case of obviousness
of those claims that Appellants have not persuasively rebutted. Specifically,
the Examiner has (1) pointed out the teachings of Hanamura and Stankewitz,
(2) noted the perceived differences between these references and the claimed
invention, and (3) reasonably indicated how and why the references would
have been modified by the teachings of Atsushi to arrive at the claimed
invention (Answer 5-10). Once the Examiner has presented a prima facie
case of obviousness, the burden then shifts to Appellants to present evidence
or arguments that persuasively rebut the Examiner's prima facie case.
Appellants did not persuasively rebut the Examiner's prima facie case of
obviousness, but merely reiterated that the Examiner’s proposed
modification renders Hanamura unsatisfactory for its intended purpose. For
the reasons previously discussed, the Examiner’s rejection of 10, 12, 16-19,
23, and 28 is sustained.

DECISION
In summary, we have sustained the Examiner's rejections with respect
to all claims on appeal. Therefore, the decision of the Examiner rejecting
claims 10-13, 15-19, 21-24, and 26-30 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2004).

AFFIRMED

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